Patently-O Blog: Terms of Use

Patent,

Patently-O Blog: Terms of Use

Updated December 1, 2016

Although I hope you are finding this blog useful and enjoyable, I want to make sure that our respective rights and responsibilities related to the blog are clear.  The following is intended to be a legally enforceable contract. You should be careful to note that you are assenting to the contract by accessing the blog more than once. Each subsequent intentional access of the blog likewise will serve as assent to the contract.  

Patently-O LLC (PO) offers this blog as a service to you subject to the following terms and conditions of use (“Terms”).  By accessing the Patently-O blog or its related services (collectively the “Blog”) a second and/or subsequent time, and in consideration for the blog service that PO provides you (including at least access to information found on the blog and allowing your user comments), you agree to abide by these Terms. Alternative acceptable forms of assent/obligation include your creating content for the Blog; contributing content to the Blog; and signing-up for email delivery of content from the Blog.

The Blog is usually hosted at www.patentlyo.com (formerly patentlaw.typepad.com). As introduced above, the related services of the Blog include websites that are served under the patentlyo.com domain such as the Patent Law Journal (www.patentlyo.com/lawjournal) and Patent Law Jobs site (www.patentlyo.com/jobs). Another related service is the daily e-mail service that distributes Blog content via email.

1. Rights in the Content You Submit

Any and all works of authorship copyrightable by you and posted by you (Content) to the Blog are submitted under a fully paid-up license to PO.  Under this license, you permit PO to copy, distribute, display and perform your Content, royalty-free and via any media.  You also permit PO to distribute derivative works of your Content and to grant both explicit and implicit sublicenses to anyone.  The fully paid-up license gives PO the right to earn money from your Content in any way that PO sees fit — including posting it in a password protected site, publishing it in a book, making a movie, translating it to Russian, or making jokes about the Content.

At PO’s discretion, this license may permit RSS aggregators to copy, distribute, display and perform any Content that you submit. Further, your submission does not create any obligation on PO to publish your submitted Content or to retain your Content.

2. Conduct

I believe deeply in free speech. However, this is PO’s Blog, and PO reserves the right to remove any content that you may post. As a general matter, PO often tries to make some attempt to remove content that is illegal, obscene, defamatory, threatening, infringing of intellectual property rights, invasive of privacy or otherwise injurious or objectionable to PO.  However, PO’s filters are far from perfect – PO disclaims any responsibility for poor filtering.

You may not use PO’s name or the name of Dennis Crouch or any other author to endorse or promote any product, opinion, cause or political candidate. Representation of your personal opinions as endorsed by PO is strictly prohibited.

By posting content to the Blog, you warrant and represent that you either own or otherwise control all of the rights to that content, including, without limitation, all the rights necessary for you to provide, post, upload, input or submit the content, or that your use of the content is a protected fair use. You agree that you will not knowingly and with intent to defraud provide material and misleading false information. You represent and warrant also that the content you supply does not violate these Terms, and that you will indemnify and hold PO and Dennis Crouch harmless for any and all claims resulting from content you supply. 

You acknowledge that PO does not necessarily pre-screen or regularly review posted content, but that PO shall have the right to remove or modify in PO’s sole discretion any content that PO considers to violate these Terms or for any other reason.  PO may also delegate this authority or any other rights or responsibilities of this contract.

You agree that all content posted to the Blog is the sole responsibility of the individual who originally posted the content. You agree, also, that all opinions expressed by users of this site are expressed strictly in their individual capacities, and not as representatives of PO, its owners or employees.

You agree that neither PO nor Dennis Crouch will be liable, under any circumstances and in any way, for any errors or omissions, loss or damage of any kind incurred as a result of use of any content posted on this site. You agree to evaluate and bear all risks associated with the use of any content, including any reliance on the accuracy, completeness, or usefulness of such content.

3. Disclaimer of Warranties and Limitation of Liability

This site is provided on an “as is” and “as available” basis. Neither PO nor Dennis Crouch make any representations or warranties of any kind, express or implied, as to the site’s operation or the information, content or materials included on this site. To the full extent permissible by applicable law, PO & Dennis Crouch hereby disclaim all warranties, express or implied, including but not limited to implied warranties of merchantability and fitness for any particular purpose. Neither PO nor Dennis Crouch will be liable for any damages of any kind arising from the use of or inability to use this site. You expressly agree that you use this site solely at your own risk.

If you distribute any Blog content to any third party, you agree to warrant that the third party has agreed to all Terms.

These posts are not legal advice and are written for the eyes of other patent attorneys and patent agents. This site belongs to PO. These posts are not edited by Dennis Crouch’s employers or their clients and, as such, cannot be so attributed. Similarly, this Blog and these posts are not works for hire, but are written entirely outside of the scope of Dennis Crouch’s employment. To the extent that any of Dennis Crouch’s employers’ resources have been used to maintain the site, that use was done with full understanding that a limited amount of personal computer use is acceptable.  Views expressed here should be double-checked for accuracy and current applicability.  Don’t go playing the stock market based on these posts either — because these post do not provide financial advice.

4. Privacy Policy

The nature of blogging is to reach a public audience. Please be aware that any information that you submit to PO whether through forms or email, including personally identifiable information, may be publicly displayed on the Blog, or on websites within or not within our control. If you don’t want others to see such information, don’t submit it. PO may publicly display the IP addresses of visitors and contributors the Blog.  PO may use your IP address to help diagnose problems with our server, to tailor site content and to format the site and software to user needs, and to generate aggregate statistical reports. PO may use aggregate visitor data to prepare publicly displayed reports regarding the traffic on individual blogs, site popularity rankings, and referrers that visitors use to access individual blogs.

5. Modification of These Terms of Use

PO reserves the right to change, at any time, at PO’s sole discretion, the Terms under which these Services are offered. You are responsible for regularly reviewing these Terms (Monthly). Your continued use of the Services constitutes your agreement to all such Terms and their revisions.

6. Copyright

The material here is copyrighted. Anyone should feel free to copy a short snippets from the Blog, so long as you attribute the material source.  A sample attribution follows: Dennis Crouch, Patently-O available at https://patentlyo.com. Attribution is required under this contract even if the use would be considered a “fair use.” Contact PO (via dcrouch@patentlyo.com) if you want to copy an entire post or a series of posts.

7. Reader Addendum

Anyone who reads content from the site more than twice agrees to not charge PO or Dennis Crouch with any violation of copyright, Lanham Act, patent, defamation, libel, or fraud claim based wholly or partially on any aspect of this Site or Blog.  If you do have a problem with anything posted on the site or feel that you have an ownership claim to anything on the site, please contact PO immediately.

8. Severability

If portions of these Terms are found unenforceable, the remainder of the contract is still enforceable.

9. DMCA Notice

If you believe that your work has been copied in a way that constitutes copyright infringement, please provide our Copyright Agent the following information:

  • 16.1: an electronic or physical signature of the person authorized to act on behalf of the owner of the copyright interest;
  • 16.2: a description of the copyrighted work that you claim has been infringed, including the URL (web page address) of the location where the copyrighted work exists or a copy of the copyrighted work;
  • 16.3: a description of where the material that you claim is infringing is located on the site, including the URL;
  • 16.4: your address, telephone number, and email address;
  • 16.5: a statement by you that you have a good faith belief that the disputed use is not authorized by the copyright owner, its agent, or the law; and
  • 16.6: a statement by you, made under penalty of perjury, that the above information in your Notice is accurate and that you are the copyright owner or authorized to act on the copyright owner’s behalf.

PO’s Agent for Notice of claims of copyright infringement can be reached as follows:

  • by mail: Dennis Crouch, 4109 Watertown Pl, Columbia MO 65203
  • by phone: 573.289.6361
  • by email: dcrouch@patentlyo.com

 

CAFC: When is trash “in” a trashcan?

Patent,

BreastPumpPatentCannon Rubber v. The First Years (Fed. Cir. 2005, NONPRECEDENTIAL).

In a claim construction dispute over the term “in,” the CAFC used its trashcan analogy:

As an initial matter, we note that the term “in” is a simple, non-technical term, and that under its ordinary meaning, a “diaphragm disposed in the body” includes diaphragms contained entirely and partially in the body. For example, a trash bag is “in” a trashcan even though a portion of it is hanging outside of the trashcan.

NOTE: It is good that this decision is nonprecedential because it does not follow Phillips v. AWH. Rather, the case merely cites Phillips for the proposition that the construction may depart from the plain meaning of a claim term “when the patentee has acted as a lexicographer or when the patentee has clearly limited the scope of the invention through a disclaimer in the specification or prosecution history.” . . .  

RIM Appeals to the Supreme Court

Patent, Patent Cases 2005

PatentlyOImage009 Research-In-Motion v. NTP (Supreme Court). [Updated 12/19/05]

The BlackBerry patent battle continues.  In a well written petition, RIM has requested that the Supreme Court hear its appeal from the Federal Circuit’s decision that that was decided in NTP’s favor in August, 2005.

The appeal involves the question of territoriality of the patent laws.  Specifically, RIM poses the following question to the Court:

Under § 271(a) of the Patent Act, “use” infringement is expressly limited to use of a patented invention “within the United States.” The question presented is: Whether an Internet-based global telecommunications system, such as the BlackBerry wireless email system, is used “within the United States,” where components crucial to the system’s operation are located outside the United States.

RIM, a Canadian company, maintains its routers in Canada and has argued that because a portion of its allegedly infringing system was outside of the US that it could not infringe a US patent.  NTP argued the other side — that the mere fact that some servers were located abroad (while many others were within the US) cannot let RIM escape judgment.  For its part, the Court of Appeals for the Federal Circuit split-the-baby and differentiated between system claims and method claims. 

  • For infringement of method claims, each and every step must be performed in the US.

  • For infringement of system claims, the US must be the place where control of the system is exercised adn beneficial use of the system obtained..

In the past two years, the Court has turned down at least two cases involving extraterritorial application of the patent laws.*  Perhaps setting the stage for certiorari here. (odds are still low).

More Info:

  • Download RIM’s Petition for Cert (PDF).

  • According to news reports, all five of NTP’s patents have received office action rejections at least once in the reexamination proceedings, and three of them have received two non-final rejections. [Link]

  • Crouch, BlackBerry Settlement Found Unenforceable, Patently-O: Patent Law Blog (November 30, 2005).

  • Crouch & Kafadar, Pushing The Boundaries, 176 Patent World 10 (October 2005) [Link]

  • * Pellegrini v. Analog Devices and Microsoft v. Eolas.

Patently-O Tidbits

Patent

Patent Reform Scholarship: 

  • [Link] Professor Daniel Cahoy (Penn State) argues that patent reform is best accomplished through an incremental approach rather than through comprehensive changes. An Incrementalist Approach to Patent Reform.
  • [Link] James McEwen (Stein McEwen & Bui) has also published his article on Patent Reform — Is the Cure Worse Than the Disease? An Overview of the Patent Reform in John Marshall’s RIPL.  Although appears dead for 2005, the same issues will rise again next year.

Patentable Subject Matter:

  • IPO filed its amicus brief in LabCorp v. Metabolite. [Read the Brief].  The brief supports neither party, but argues that the limits of patentable subject matter under 35 USC section 101 are already properly defined.  The brief was approved by the IPO Board of Directors and written by Paul Berghoff, Joshua Rich, and Dennis Crouch. 

 

WTO permanently implements expanded compulsory licensing scheme for pharmaceuticals

Patent

ScreenShot010by Richard Carden

Following on the heels of its decision to extend the transition period for least-developed countries (“LDC’s”) to implement intellectual property laws consistent with the TRIPS (Trade Related Aspects of Intellectual Property) agreement, the WTO General Council has agreed to permanently implement a 2003 waiver of Article 31(f) of the TRIPS agreement. This decision expands access to generic pharamaceuticals by eliminating the restriction contained in Article 31(f) that use of compulsory licenses on pharmaceutical patents must be “predominantly for the supply of the domestic market of the Member authorizing such use.” The revision still requires ratification by WTO Member States, however, upon ratification, the revision will essentially allow any WTO member state to grant compulsory licenses on pharmaceutical patents in order to produce pharmaceuticals for other nations, specifically for export to LDC’s.

The decision results in the addition of Article 31bis to the TRIPS agreement. Article 31bis provides a compulsory licensing scheme where a Member country notifies the WTO if its intention to avail itself of the provisions of Articles 31 and 31bis (both exporting and importing Members must provide notification). The revision further includes an Annex to the TRIPS agreement which (1) defines many of the terms used in Article 31bis, (2) provides specifics regarding the content of the notifications, and (3) provides a method for assessing manufacturing capacity in an LDC. While Article 31bis and the Annex purport to require the importing Member to provide safeguards against re-exportation and to provide access for patent holders to legal process, the provisions are sufficiently vague that they will be difficult to police in any significant way. Further ambiguity results from the failure of the WTO to explicitly define the conditions under which compulsory licenses are appropriate. Instead, the WTO relies on “good faith” implementation by Member states.

A number of WTO members had indicated after the 2001 Doha Ministerial Conference (which resulted in the Doha Declaration, paragraph 6 of which provided for a parallel compulsory licensing scheme covering both exporting and importing Member States) and the subsequent August 2003 waiver of Article 31(f) that they would not take advantage of these provisions as importers under any circumstances. Several other members indicated that they would only avail themselves of the compulsory licensing scheme to import in “emergencies or extremely urgent situations.”

The General Council decision comes shortly after the WTO TRIPS Council decided to extend the time LDC’s have to implement IP laws in accordance with WTO standards from 2006 to 2013. LDC’s presently also have until 2016 to implement patent protection for pharmaceuticals.

Richard Carden is an intellectual property litigator at MBHB with litigation experience in cases involving diverse technologies, including medical devices, diagnostic equipment, pharmaceuticals, injection-molding systems, and automotive refrigerants.  His background includes a BSE in chemical engineering from Tulane University, an MS in chemical engineering from the University of Pennsylvania, and JD from Washington University in St. Louis.

Patent Reform

Patent, Patent Cases 2005

Of course, Patent reform will continue in 2006.  In a recent four-page magazine style article, Professors Lemley (Stanford), Lichtman (Chicago), and Sampat (Columbia) present their proposal for patent reform.  The professors argue that we should not waste money worrying about the patent office doing poor examinations on unimportant patents.  Rather, they argue, we should focus on the inventions that are economically important.  Their proposals allow market participants to identify the important issues:

  • For standard examination, courts should have weakened or no presumption of validity;
  • Applicant can pay for “gold plated” examination which would then be given presumption of validity; and
  • Allow post-grant opposition for newly issued patents — opposer would fund a new examination.

Read the proposal here: What To Do About Bad Patents?

Patent Compulsory Licensing System II

Patent, Patent Cases 2005,

eBay v. MercExchange

The upcoming MercExchange case is important, but it will not lead directory to a compulsory patent licenses on any large scale.  In this case, patentee MercExchange won its infringement suit against eBay, but was denied a permanent injunction. The district court gave four reasons for denying the injunction.

  1. General concern over the viability of business method patents;
  2. A strong likelihood of continuing disputes based on eBay workarounds;
  3. MercExchange’s willingness to license; and
  4. MercExchange’s failure to request a preliminary injunction.

Reviewing them in turn, the Federal Circuit panel dismissed each of these reasons — finding each unpersuasive.  Ultimately, finding that the defendant had shown “no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”

Now, this case has arrived at the Supreme Court to question this “general rule.” In the backdrop, the statute in question — 35 U.S.C § 283 — is written with the standard equitable language seemingly implying that injunctions are discretionary:

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

It is unclear at this point what a damages calculation would be in a case where a permanent injunction is denied — probably most importantly is whether a patentee will be allowed treble damages for the ongoing infringement.

Patent Compulsory Licensing System

Patent

For years, injunctions have been a mainstay in US patent laws.  That notion will be questioned in the upcoming Supreme Court case of eBay v. MercExchange.  As it turns out, other countries require compulsory patent licenses much more freely than does the US.

Robin Le Goff of Laurent & Charras in France provides the following summary:

———

In accordance with the Paris Convention (see below), the French Patent Law (Code de la Propriété Intellectuelle) provides five reasons for compulsory licensing:

1- Non working of invention during four years from filing,
2- Cross-licensing to and from a third party who patents an improvement depending from the initial invention,
3- Public health,
4- Insufficient production to meet market requirements,
5- National defense needs.

The German Patent Law provides the same schemes as the French one: see Sections 13, 24 and 81 here.

As noted above, the Paris Convention allows for compulsory licenses:

(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.

(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non–exclusive and shall not be transferable, even in the form of the grant of a sub–license, except with that part of the enterprise or goodwill which exploits such license.

Polish Your Resume: USPTO Seeks New Deputy Commissioner

Patent

RollaThe USPTO is seeking applicants for the job of Deputy Patent Commissioner for Patent Examination Policy.  Stephen Kunin, who is now in private practice, held the job for about ten years.  Currently, Joe Rolla holds the position but is reportedly retiring. This is an extremely important role for the ongoing health of the US patent system. 

STEPHEN.KUNINIPO has posted the job announcement here: LINK.

Patent Reform 2005 — It is Over

Patent, Patent Legislation

The Patent Reform Act of 2005 will not be enacted this year.  There is still a possibility of a back-door push to include some provisions in an omnibus appropriations bill, but at this point it is unclear what those provisions would be and whether they would be successful.

The failure of reforms this year has several sources:

  1. Lack of time: In the Senate, the committee handling intellectual property law is the same as the judiciary committee.  This term has been filled with long debates on judicial appointments that left little time for patent reform.
  2. Patents are not yet hot: It is still difficult to get Washington excited about patent law.  Historically, reform measures have taken years to build up enough inertia to get through both the House and Senate.
  3. Overreaching: The proposed reforms ended up being overreaching in a way that pitted major lobbying groups against one another.  This impasse eventually killed the possibility of moving forward with substantive changes this year.

One of the proposed measures would have eliminated the best mode requirement.  Dale Carlson of Wiggin & Dana has written a short article explaining his reasons for keeping best mode. [Article].

Court Finds Standing for Consumers to Bring Antitrust Claim of Asserting an Invalid Patent.

Patent, Patent Cases 2005,

TAQMolecular Diagnostics Lab v Hoffman La Roche (D.D.C. 2005)

By S. Richard Carden

MDL, a purchaser of Thermus aquaticus DNA polymerase or “Taq” (a component used in performing polymerase chain reaction), brought suit against Roche, Applera and others for violations of the Sherman Act, allegedly arising from Roche’s enforcement of U.S. Patent No. 4,889,818 (“the ‘818 patent”) knowing that it had been procured through inequitable conduct.  The ‘818 patent claims a thermostable DNA polymerase isolated from the Thermus aquaticus bacteria.  Defendants moved to dismiss the complaint on several bases including (1) lack of standing, (2) tolling of the statute of limitations, (3) failure to sufficiently allege a conspiracy, and (4) failure to comply with the pleading requirements of Rule 9.  The D.C. District Court denied Defendants’ motion in its entirety, with a minor exception that precluded MDL from seeking damages for the period prior to the four year statute of limitations period prior to its filing of the suit.

(more…)

Claim Construction: “A sodium phosphate” limited to one type of sodium phosphate.

Patent, Patent Cases 2005,

Norian v. Stryker (Fed. Cir. 2005).

In the second claims construction appeal, the CAFC found that the term “a sodium phosphate” was limited to a single type of sodium phosphate.  In its decision, the Court found that if the patentee had intended to cover multiple types of sodium phosphate then it should have used “at least one” language.  This decision was supported by two factors: (1) the claim was amended to use the transition “consisting of” rather than the open ended “comprising” and (2) none of the listed examples in the specification used multiple types of sodium phosphate. 

Judgment of noninfringement affirmed.

Links:

First-to-Invent vs The Constitution [Updated]

Articles and Publications, Patent,

According to Dave Simon, The First-to-File Provisions of the Patent Reform Act of 2005 Violate the Constitution’s Intellectual Property Clause.

The Patent Reform Act of 2005 proposes provisions that would change the granting of patents from the so-called first-to-invent system to a first-to-file system. The Intellectual Property Clause limits Congress to granting patents only to “Inventors”. A system enacted by Congress for granting patents to anyone other than a good faith inventor operates outside of the constraints enumerated in the Clause, and therefore is facially impermissible. The first-to-file provisions of the Act are violative of Article I, Section 8, Clause 8 of the United States Constitution.

Dave’s paper is premised on the assertion that an invention is only made once, and later independent inventions should not actually be considered inventions.  Dave is not the first to make this argument — his paper, however, is easily accessible online. Download Dave’s paper.  Ed Suominen, patent attorney in Scotsdale made the same argument back in 2001 in a paper published by the JPTOS. Download Ed’s Paper.  

Of course, it is highly unlikely that any court would agree that a first-to-file system is unconstitutional. Ed agrees — “Eldred proved that Congress can pretty much do whatever it wants about IP as far as this Supreme Court is concerned.”  Professor Mark Lemley gave his remarks in an e-mail:

I have to disagree with the claim that first-inventor-to-file is unconstitutional. Dave Simon’s reasoning is based on the idea that “inventor” means whoever thought of it first, not simply a person who thinks of it independently. But if that were true, (1) current US patent law would be unconstitutional in the circumstances in which it discounts invention in non-WTO member countries, and the system would have been unconstitutional throughout its history when it was limited to inventive activity in the US; and (2) copyright law would be unconstitutional because it treats any independent creator as an author. Both results seem unlikely to me.

If you are against a switch to first-to-file, I would not hang my hat on the constitutionality argument.

What are the parts of a patent application?

Patent, Patent Prosecution

Under 37 CFR 1.77 the specification should include the following sections, in order:

  1. Title of the invention.
  2. Cross-reference to related applications.
  3. Statement regarding federally sponsored research or development. 
  4. The names of the parties to a joint research agreement.
  5. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference.
  6. Background of the invention.
  7. Brief summary of the invention.
  8. Brief description of the several views of the drawing.
  9. Detailed description of the invention.
  10. A claim or claims.
  11. Abstract of the disclosure.
  12. “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).

These sections may be identified in the application by section headings in uppercase but without underlining or bold type. 

As you develop your style of patent drafting, it is useful to occasionally look back to the rules of practice to ensure that you are still following them.

Links:

Do you have comments on the recent trend to eliminate various sections — such as the summary of the invention.

Patently-O TidBits

Patent
  • BlackBerry Setback — Listen to Marketplace.
  • TechnoLawyer, the group that voted Patently-O as the Best Practice Area Legal Blog of 2005, has just published a new book, “BlawgWorld 2006.”  The book “takes you on a journey through 51 of the most influential blawgs.”  I’m happy to report that Patently-O is included.  The book is is available free online (registration required).  www.blawgworld.com.
  • EBay at the Supreme Court: Hal Wegner provided the following directions for following the MercExchange v. EBay case at the Supreme Court
    • To follow the Supreme Court docket sheet with up to date information on the exact status, the Supreme Court website should be accessed, http://www.supremecourtus.gov/ ;
    • Click on “DOCKET;”
    • Then type in the blank at the bottom “MercExchange”, which will link you to the docket sheet of the Court.

How to Electronically File Patent Assignments

Patent, Patent Prosecution
A good way to transmit assignments is over the internet – no faxing necessary.  This is especially useful where the assignment is for a single patent or application. Assignments of multiple patents or application would have to be sent individually so faxing might be better for assignments of multiple items.
 
For electronic assignment recordation:
  1. Scan the Assignment.
  2. Go to the Assignment Web site and complete the Assignment Recordation Form – http://epas.uspto.gov/.
  3. Have the attorney or agent sending the assignment sign the electronic form by typing in their name.
  4. Hit the send button.
You will receive an immediate email receipt confirmation.
You will receive a fax assignment recordation notice within about 24 hours.
NOTE: This post comes from the files of Blair Hughes.  Blair is a partner at MBHB LLP and has extensive experience in protecting patent rights, in both the U.S. and abroad.

BlackBerry Patent Settlement Found Unenforceable — Stay of Injunction Denied

Patent

PatentlyOImage009NTP v. Research-in-Motion

Judge Spencer of the Eastern District of Virginia has determined that the $450 million agreement between RIM and NTP that was announced Spring 2005 is not enforceable:

“The court finds the parties do not have a valid and enforceable settlement.”

RIM had asked the court to enforce the settlement that would allow it to end the patent lawsuit and escape from the threat of injunction. 

Settlement Agreement? In December 2004, the Federal Circuit released its opinion that pushed against the territorial bounds of patent law.  In that opinion, the Court of Appeals for the Federal Circuit (CAFC) found that U.S. patent law covers instances where infringing elements are located abroad — so long as the “control and beneficial use” of the infringing system is within U.S. territory.  Soon thereafter, RIM filed a motion for rehearing en banc that is still pending. 

The CAFC’s decision, strongly in favor of NTP, paved the way for a March 2005 “settlement” that reportedly included $450 million for NTP.  The original settlement announcement was based on a 1/2 page term-sheet reportedly signed by the parties.  As would be expected, 50 square inches of paper turned out to create a whole new level of disagreement between the parties who have been working through court mediation to flesh out the agreement.

Settlement Breakdown: In early June 2005, the settlement issue came to a head and the parties staked out their positions on paper before the CAFC.  However, that court declined to hear the issue until it being first decided by the district court.

STAY DENIED: In addition, the district court denied RIM’s motion to stay. (decision posted below).  In his opinion, Judge Spencer held that:

The Court recognizes the rights of a patent holder whose patents have been infringed. Indeed, the essence of patent protection is that a party legally deemed to have infringed one or more patents shall be liable to the patent holder for damages. Valid patents would be rendered meaningless if an infringing party were allowed to circumvent the patents’ enforcement by incessantly delaying and prolonging court proceedings which have already resulted in a finding of infringement.

The Court intends to comply with the Federal Circuit’s mandate and move this litigation forward so as to bring closure to this case on remand. Derailing these proceedings when a resolution is in sight would be ill-advised at best.

For these reasons, RIM’s Motion for Stay of Proceedings Pending Reexamination of NTP, Inc.’s Patents-in-Suit is hereby DENIED.

The Court’s opinion the filings from the Department of Justice, however, it appears to be clear that the Court’s next step will be to determine the bounds of any injunction.

Files:

EBay Arrives at Supreme Court: A Landmark Patent Case

Patent, Patent Cases 2005

MercExchangePatent_small1eBay v. MercExchange (on petition for certiorari).

The Supreme Court has agreed to review the question of “when it is appropriate to grant an injunction against a patent infringer” and will question the century-old precedent of Continental Paper Bag (1908).

The issues before the Court include:

  1. Whether the Federal Circuit erred in setting forth a general rule in patent cases that a district court must, absent exceptional circumstances, issue a permanent injunction after a finding of infringement. (Question proposed by eBay).
  2. Whether this Court should reconsider its precedents, including Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908), on when it is appropriate to grant an injunction against a patent infringer. (Question proposed by Supreme Court).

 In its petition for certiorari, eBay spells out the traditional four-factor test for injunctive relief and argues that the four-factor test should apply to patent cases rather than the de facto per se test applied by the CAFC.  The four-factor test includes consideration of:

  1. Irreparable harm from not issuing an injunction;
  2. Whether an adequate remedy exists in law (damages);
  3. Whether the injunction would be in the public interest; and
  4. Whether a balance of hardships would tip in the plaintiff’s favor. 

According to regarded patent law professor Joseph Miller, this certiorari decision is breathtaking. “If the Court writes narrowly, it will be the most important patent case since Chakrabarty or Diehr. If the Court writes broadly, it will be the most important patent case (perhaps even the most important patent or copyright case) in a century.”

An injunction in this case would not threaten eBay’s core business, but is directed to the “buy-it-now” feature of the online auctioneer.

Links:

 

Disclosed Subject Matter Only Dedicated to the Public When Specifically Identified as an Alternative to a Claim Limitation

Patent, ,

Pfizer v. Teva (Fed. Cir. 2005) (05–1331).

By S. Richard Carden

On appeal from the District Court’s grant of a preliminary injunction against generic manufacturers/distributors Ranbaxy and Teva, the Federal Circuit concurred with the lower court’s finding of likelihood of success and irreparable harm and thus affirmed the PI grant. Perhaps the most significant portion of the decision related to the Circuit’s clarification of dedication of subject matter to the public for the purposes of the doctrine of equivalents, as recently set forth in Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co. (Fed. Cir. 2002) (en banc). (more…)